Excerpts from Senate Confirmation Questions for the Record

Hearing Held December 1, 2021

 

Senator Chuck Grassley Questions for the Record for Ms. Kathi Vidal

Nominee for U.S. Patent and Trademark Office Director

SENATOR GRASSLEY: Based on your experience do you think that IPR disadvantages small or individual inventors and favors large entities? Please explain why or why not.

ANSWER: I believe that any litigation, whether at PTAB or in other tribunals, can disadvantage parties with limited means, which is often the situation with small and individual inventors. For the U.S. to promote innovation, stimulate the economy and grow jobs, we need all hands on deck when it comes to innovation. This includes representation across industry sectors and all inventors and would-be inventors, from individual inventors and start-ups to SMEs (Small and Medium-Sized Enterprises) to large entities, as well as from every demographic (across U.S. regions, gender, race, identity, social-economic class, veterans, and any other under-served or under-represented group). If confirmed, I would continue and build on the efforts by the USPTO and PTAB to expand access, outreach, and education to level the playing field and broadly promote innovation. I look forward to working with the PTAB and others in the Office, as well as stakeholders and Congress, to ensure that all USPTO functions are as balanced as possible.

SENATOR GRASSLEY: Do you think administrative changes are needed at the Patent Trial and Appeal Board to prevent the filing of multiple challenges against the same patent?

ANSWER: Presently the PTAB can exercise its discretion under General Plastic Co., Ltd. V. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (precedential), to prevent the filing of multiple challenges against the same patent. On October 20, 2020, the USPTO issued a Request for Comments (RFC) that, among other items, sought public feedback on the exercise of discretion in situations involving serial petitions (later petitions challenging the same patent that was challenged previously in an AIA proceeding), and parallel petitions (multiple petitions challenging the same patent at or about the same time).

The USPTO received 822 comments from a wide range of stakeholders, including individuals, associations, law firms, companies, and members of this Committee. If confirmed, I look forward to working with the PTAB and others at the Office, as well as stakeholders, you and Congress, to assess whether further reform is necessary and what form that might take.

SENATOR GRASSLEY: What changes, if any do you think are necessary to ensure fair and consistent results at the Patent Trial and Appeal Board?

ANSWER: The PTAB’s practice of designating certain opinions precedential promotes fair and consistent results and mirrors practices used by other tribunals. The ability of the USPTO to gather stakeholder feedback, for example the October 20, 2020 RFC on PTAB Discretionary Institution of AIA Proceedings, allows the USPTO to consider stakeholder input and fairness when adapting its procedures. Furthermore, Director review of PTAB decisions in view of the Supreme Court’s Arthrex decision can be used as a vehicle to further promote fair and consistent results. That said, to the extent there could be more clarity in functional claiming, there is an opportunity to improve the consistency and fairness of PTAB results. There has been stakeholder feedback that the system could be better balanced. If confirmed, I look forward to working with the PTAB and others at the Office, as well as stakeholders and Congress, to assess what further reform is necessary.

 

Senator Josh Hawley Questions for the Record for Ms. Kathi Vidal

Nominee for U.S. Patent and Trademark Office Director

SENATOR HAWLEY: If you are confirmed, what steps, if any, do you intend to take to prevent the abuse of the Patent Trial and Appeal Board’s inter partes review process by large companies to the detriment of smaller ones?

ANSWER: I believe that any litigation, whether at PTAB or in other tribunals, can disadvantage parties with limited means, which is often the situation with small and individual inventors. I believe that for the U.S. to promote innovation, stimulate the economy and grow jobs, we need all hands on deck when it comes to innovation. This includes representation across industry sectors and all inventors and would-be inventors, from individual inventors and start-ups to SMEs (Small and Medium-Sized Enterprises) to large entities, as well as from every demographic (across U.S. regions, gender, race, identity, social-economic class, veterans, and any other under-served or under-represented group).

If confirmed, I would continue and build on the efforts by the USPTO and PTAB to expand access, outreach, and education to level the playing field and broadly promote innovation. As part of that effort, if confirmed, I look forward to working with the PTAB on the development of a pro bono program that can help offset the costs of PTAB procedures for those who cannot afford it. I have also heard specific concerns regarding small entities being harassed by the filing of serial PTAB petitions on a single patent. The latter is somewhat ameliorated by the PTAB’s ability to exercise its discretion under General Plastic Co., Ltd. V. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (precedential), to prevent the filing of multiple challenges against the same patent.

 

Senator John Kennedy Questions for the Record for Ms. Kathi Vidal

Nominee for U.S. Patent and Trademark Office Director

SENATOR KENNEDY: do you believe that Big Tech receives any kind of competitive advantage over smaller inventors—intentionally or unintentionally—with respect to the USPTO patent application process and USPTO’s Patent Trial and Appeal Board (PTAB) adjudications?

ANSWER: The USPTO applies the same statutory requirements during patent examination and in PTAB adjudications for all, regardless of the size of the applicant, patent owner or petitioner. The USPTO provides fee discounts for small and micro entities for patent examination and maintenance as well as for PTAB appeals. That said, I believe that any litigation, whether at PTAB or in other tribunals, can disadvantage parties with limited means, which is often the situation with small and individual inventors.

I believe that for the U.S. to promote innovation, stimulate the economy and grow jobs, we need all hands on deck when it comes to innovation. This includes representation across industry sectors and all inventors and would-be inventors, from individual inventors and start-ups to SMEs (Small and Medium-Sized Enterprises) to large entities, as well as from every demographic (across U.S. regions, gender, race, identity, social-economic class, veterans, and any other under-served or under-represented group).

If confirmed, I would continue and build on the efforts by the USPTO and PTAB to expand access, outreach, and education to level the playing field and broadly promote innovation. As part of that effort, if confirmed, I look forward to working with the PTAB on the development of a pro bono program that can help offset the costs of PTAB procedures for those who cannot afford it. I have also heard specific concerns that smaller entities are being harassed by the filing of serial PTAB petitions on a single patent. The latter is somewhat ameliorated by the PTAB’s ability to exercise its discretion under General Plastic Co., Ltd. V. Canon Kabushiki Kaisha,IPR2016-01357 (PTAB Sept. 6, 2017) (precedential), to prevent the filing of multiple challenges against the same patent.

If confirmed, I would also explore further reform based on the responses to the USPTO’s October 20, 2020, Request for Comments (RFC) that, among other items, sought public feedback on the exercise of discretion in situations involving serial petitions (later petitions challenging the same patent that was challenged previously in an AIA proceeding), and parallel petitions (multiple petitions challenging the same patent at or about the same time). I would look forward to working with the PTAB and others in the Office, as well as stakeholders, you and this Committee, to ensure that all USPTO functions are as balanced as possible.

SENATOR KENNEDY: If your answer is “yes,” please identify with specificity the advantages you believe Big Tech receives when availing themselves of the USPTO. If your answer is “no,” please explain the basis for your belief that Big Tech and smaller inventors enjoy a level playing field with respect to the patent application and issuance process.

ANSWER: I believe the playing field is level to the extent the same statutory requirements apply during patent examination and in PTAB adjudications for all, regardless of the size of the applicant, patent owner or petitioner. In terms of any entity having advantages at the USPTO, as in any litigation, whether at PTAB or in other tribunals, and more generally, parties with limited means can be disadvantaged or have less access. As to this concern, it is somewhat ameliorated by the USPTO fee discounts for small and micro entities for patent examination as well as for PTAB appeals. That said, the USPTO fees are often dwarfed by legal fees.

To address that issue, there is a pro bono program for patent prosecution and will soon be one for PTAB appeals. I have also heard specific concerns regarding the filing of serial PTAB petitions on a single patent. The latter is somewhat ameliorated by the PTAB’s ability to exercise its discretion under General Plastic Co., Ltd. V. Canon Kabushiki Kaisha, IPR2016- 01357 (PTAB Sept. 6, 2017) (precedential), to prevent the filing of multiple challenges against the same patent.

If confirmed, I would also explore further reform based on the responses to the USPTO’s October 20, 2020, Request for Comments (RFC) that, among other items, sought public feedback on the exercise of discretion in situations involving serial petitions (later petitions challenging the same patent that was challenged previously in an AIA proceeding), and parallel petitions (multiple petitions challenging the same patent at or about the same time). If confirmed, I would look forward to working with the PTAB and others in the Office, as well as stakeholders and Congress, to ensure that all USPTO functions are as balanced as possible.

SENATOR KENNEDY: If confirmed, what specific steps will you take as USPTO Director to ensure that small- time inventors and patent applicants will receive the same level of access and opportunity to be heard before the USPTO as Big Tech companies, specifically with respect to adjudications before the PTAB?

ANSWER: If confirmed, in addition to ensuring fair consideration of comments submitted to the USPTO, I would expand outreach to ensure that feedback is solicited not only from the USPTO current users and those with greater means but also more broadly from other stakeholders and organizations in which other stakeholders are involved.